Valve Corp v. Immersion Corp

1. Case Identification

• Case #: IPR2024-00477
• Patent #: 7,336,260
• Filed: January 19, 2024
• Petitioner(s): Valve Corporation
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 1-7

2. Patent Overview

• Title: Tactile Feedback for Input Devices
• Brief Description: The ’260 patent discloses systems for providing haptic feedback to input devices on electronic equipment, such as mobile phones. The purported novelty is providing different tactile sensations based on multiple, distinct levels of pressure applied by a user to an input device.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are anticipated by and/or obvious over Komata.

• Prior Art Relied Upon: Komata (Application # 2001/0008849).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Komata, which discloses a video game controller, anticipates every limitation of claims 1-7. Komata’s controller has pressure-sensitive buttons that generate an analog voltage corresponding to the applied pressure. This voltage is converted to one of 256 digital pressure-sense values (e.g., 1, 10, 100, 200), which maps directly to the claimed detection of first, second, third, and fourth increasing pressures. Komata’s system then uses a conversion table to generate a corresponding drive signal that causes a vibration generator in the controller to provide a tactile sensation, meeting the claim limitations for providing tactile sensations based on the detected pressures. Dependent claims are met as Komata teaches applying vibrations to a second controller (claims 3-4) and detecting pressures on its buttons (claims 5, 7), and discloses that vibration magnitude depends on pressure, making different sensations obvious (claim 6).
  • Motivation to Combine (for §103 grounds): Not explicitly argued as a combination, as Komata is asserted to teach all elements. Any obviousness argument relies on the inherent teachings of Komata, such as varying vibration magnitude based on the detected pressure magnitude.
  • Expectation of Success (for §103 grounds): A POSITA would expect success as Komata’s system was designed to translate varying pressure inputs into varying haptic outputs.

Ground 2: Claims 1-7 are anticipated by and/or obvious over Tsuji.

• Prior Art Relied Upon: Tsuji (Japanese Application Publication No. 11-212725).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Tsuji, which describes a touch panel for an ATM, discloses the claimed invention. Tsuji’s device uses piezoelectric elements to detect the "operating force" applied to the screen and classifies it into one of five distinct levels (F0-F4). This corresponds to detecting at least four different pressures. The system then consults a table to select a drive mode based on the detected force classification and location, causing the piezoelectric elements to vibrate and provide a tactile sensation. This process meets the limitations of detecting multiple, increasing pressures and providing corresponding tactile feedback. For claim 7’s fifth pressure, Petitioner argued it would be an obvious design choice to add another pressure threshold to Tsuji’s existing system for increased granularity.
  • Motivation to Combine (for §103 grounds): The primary motivation, for making tactile sensations different (claim 6) or adding a pressure level (claim 7), was to provide more precise and distinguishable feedback to a user, a known goal in the art.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in modifying Tsuji's threshold-based system to add more levels of granularity, as it was a predictable extension of the disclosed technology.

Ground 3: Claims 1-7 are anticipated by and/or obvious over Rosenberg.

• Prior Art Relied Upon: Rosenberg (WO 99/66997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rosenberg, which discloses a force-feedback mouse, teaches all claim limitations. Rosenberg’s mouse has buttons with sensors that detect their precise position as they are depressed, which corresponds to the pressure applied. Rosenberg explicitly teaches detecting "at least three positions." An actuator provides a tactile sensation (e.g., a "spring effect") with a magnitude dependent on the detected button position. As a user presses harder, the button moves further, the system detects a new position (a greater pressure), and the actuator outputs a stronger resisting force (a different tactile sensation). This maps to the independent claim’s requirements. Rosenberg’s disclosure of a second mouse button (316b) with similar capabilities meets the limitations of the dependent claims directed to a "second input device."
  • Motivation to Combine (for §103 grounds): For limitations requiring more than three pressures, Petitioner argued it would have been obvious to implement more detection points, as Rosenberg’s sensor provides a continuous range of output, and doing so would provide more precise feedback.
  • Expectation of Success (for §103 grounds): Because Rosenberg’s sensor was capable of detecting a continuous range of positions, a POSITA would have reasonably expected to successfully define and use four or more distinct positions to trigger different feedback.

4. Key Claim Construction Positions

• "Single Touch": Petitioner argued that, contrary to Patent Owner's likely position, the claims do not require the multiple pressures to be detected during a single, continuous user contact. Petitioner asserted the claims contain no such temporal limitation, and the Board correctly adopted this view in a prior IPR involving the ’260 patent before it was terminated.
• "Pressure": Petitioner noted that the ITC, in prior litigation, adopted Patent Owner's proposed construction of "pressure" as the "application of force from a contact." Petitioner argued this construction is met by the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued strongly against discretionary denial under both Fintiv and General Plastic.
• Fintiv Factors: Petitioner contended that the district court trial date is scheduled for late 2025, likely after a Final Written Decision (FWD) would issue in this IPR. Furthermore, litigation investment has been minimal, and the IPR addresses claims not asserted in the district court case, reducing overlap.
• General Plastic Factors: Petitioner emphasized that it has no relationship with Apple, the petitioner in prior IPRs against the ’260 patent. Petitioner argued this is not a "follow-on" petition, as it was filed promptly after Petitioner was sued and introduces Rosenberg, a new reference never considered by the Board or during prosecution. It also reuses art from a prior IPR that the Board found promising enough to institute before the case settled.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-7 of the ’260 patent as unpatentable.